Looking for TOSSERS in the local bottle-o

In a recent ATMO decision, Lion-Beer, Spirits & Wine Pty Ltd v Michael Harvey [2013] ATMO 6 (22 January 2013), Lion-Beer failed in its opposition against Mr Harvey’s trade mark application for the mark TOSSERS EXTRA DRY.

The Opponent submitted that TOSSERS EXTRA DRY was deceptively similar to its prior TOOHERYS EXTRA DRY registered mark, as they shared the letters: TO–E-S, plus the phrase ‘EXTRA DRY’.

The case highlights some interesting arguments, such as the Opponent’s counsel submitting that the marks are similar given the shared letters. The Opponent’s counsel submitted the following text to show that first and last letters of each word play an important part in the visual cognitive process, and asserting that TOSSERS and TOOHEYS may be visually confused on this basis, particularly as they shared the phrase ‘extra dry’:

“The rset can be a toatl mses and you can sitll raed it wouthit porbelm. This is bcuseae we do not raed ervey lteter by itslef but the wrod as a wlohe.”

Despite these arguments, the Opponent failed in this case.

The Opponent’s case for similarity based on the letters TO-E- S was (as eloquently put by the Hearings Officer) ‘unremarkable’, and the Hearings Officer commented that anyone who had “played Scrabble or hangman will know that T, O, S, E and R are among the most commonly used letters in the English language”.

Vital to the Hearing Officer’s decision was the meaning of the words TOSSERS and TOOHEYS. The former was a colloquial term with a very strong meaning, and the latter had no such connotation.

The arguments were also dismissed on the basis of phonetics, as the double O in Tooheys was deemed to create a totally different sound that then ‘o’ in Tossers. Similarly, the word suffixes   were distinguishable, given that the TOSSERS suffix adopted an “ur” sound, in contrast with the TOOHEYS suffix which adopted an “ee” sound.

The reputation and contrary to law opposition grounds also failed, on the basis that the dissimilarity between the marks made it unlikely that deception or confusion would occur.

While not a ground-breaking decision, this case certainly highlights that common prefix and suffixes are not, in themselves, sufficient to render two marks deceptively similar. The case is also very amusing in numerous parts.

In the meantime, it appears that TOOHEYS EXTRA DRY and TOSSERS EXTRA DRY will coexist in the marketplace.

From the images I could find, the TOSSERS branding looks quite different from the TOOHEYS branding:

               

However, even with my ‘plain word’ goggles on, the word ‘TOSSERS’ stands out and really punches you in the face (at least compared to the more mundane ‘TOOHEYS’). In other words, I agree with the Hearings Officer. TOSSERS and TOOHEYS are unlikely to be confused, from the mere meaning of the former.

Apparently, the word TOSSERS was selected to appeal to a more youthful market. (One can only imagine the advertisements that might follow.)

Given the media attention this ‘brand war’ has received, I myself am keen to see this rather risque (and humorous) brand, and the marketing campaigns for it, in the marketplace – so will be looking out for the TOSSERS beer in the local bottle-o.

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